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[mattthew]

I have a 3 year old application I elected not to have published.  Assuming no prior art has come up in the mean time what  is the latest and cheapest option to be able to offer a potential buyer the ability to obtain foreign patents on the same invention?

I got a restriction and so I can file a divisional to keep things pending.

I'm hoping I can file foreign the day before it issues without the benefit of the US filing date and take my chances on prior art from the last 3 years.

Tried looking this one up but am genuinely confused.  Any assistance would really be appreciated.

[Dazed-n-confused]

I have a 3 year old application I elected not to have published.  Assuming no prior art has come up in the mean time what  is the latest and cheapest option to be able to offer a potential buyer the ability to obtain foreign patents on the same invention?
...
I'm hoping I can file foreign the day before it issues without the benefit of the US filing date and take my chances on prior art from the last 3 years.

Bump, anyone?  I looked at this last night and was about to say, "you're hosed", but then realized I've never dealt in the land of non-pub'd U.S. apps.  Certainly he will have to apply for to the USPTO to get the foreign filing license.

But is there anything in the PCT regs (or main country national regs, EPC, etc.) that states an unpublished prior application, from which you don't claim priority, still messes up your chance to foreign file? 

But even if clear there, looking strictly from a prior art standpoint, won't his US patent when granted stand as "novelty-only" art against his foreign apps?  (Most jurisdictions do use something akin to our old 102(e), except that this type of art is only useful if novelty-destroying.  Which would be the case with identical apps).

[JimIvey]

The answer depends on the laws of the countries in which foreign filing is to happen.  So, to get an answer, we'd need to know what countries are included in "foreign rights" and someone who's familiar with the law in those countries.

Regards.

[mattthew]

Dazed-n-confused and JimIvey,

Thank you so much for your help.  I was planning on foreign filing before the US patent issues, which would be it's first public publishing.

Basically I want to have an allowed application with the option to obtain foreign patents that I can show to a potential buyer.

Thanks you!
Matthew

[klaviernista]

I have a 3 year old application I elected not to have published.  Assuming no prior art has come up in the mean time what  is the latest and cheapest option to be able to offer a potential buyer the ability to obtain foreign patents on the same invention?

You are going to have a heck of a time explaining to the USPTO why you requested non-publication of the U.S. case if you later seek patent rights in a foreign country.  The primary basis of the PTO agreeing not to publish your U.S. non-provisional application is a statement by the applicant that the invention disclosed in the U.S. application will not be the subject of an application filed in another country requiring publication of applications 18 months after filing (which is a lot of countries).

35 U.S.C. b(2)B(i):
"If an applicant makes a request upon filing, certify­ing that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publica­tion of applications 18 months after filing, the application shall not be published as provided in paragraph (1)."

"37 CFR 1.213. Nonpublication request.

(a)   If the invention disclosed in an application has not been and will not be the subject of an application filed in another coun­try, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the appli­cation will not be published under 35 U.S.C. 122(b) and § 1.211 provided:

(1)   A request (nonpublication request) is submitted with the application upon filing;

(2)   The request states in a conspicuous manner that the application is not to be published under 35 U.S.C. 122(b);

(3)   The request contains a certification that the invention disclosed in the application has not been and will not be the sub­ject of an application filed in another country, or under a multilat­eral international agreement, that requires publication at eighteen months after filing; and

(4)   The request is signed in compliance with § 1.33(b)."

Of course, you can always rescind the non-publication request, but based on your post here the certification you made to the PTO could be called into question.  See the following:

" A certification under 37 CFR 1.213(a)(3) cannot be made based on a lack of knowl­edge of the applicant’s plans concerning the filing of any counterpart application that would be subject to eighteen-month publication or the applicant’s past practices or tendencies with respect to the filing of foreign counterpart applications. The fact that a par­ticular applicant has a tendency to file counterpart applications for fewer than fifty percent of its U.S. applications is not alone an adequate basis for filing all or any of the U.S. applications with a nonpublica­tion request. The applicant must have an affirmative intent not to file a counterpart application, and not just the absence of any intent or plan concerning the filing of any counterpart application that would be subject to eighteen-month publication. A nonpublication request is only appropriate if the applicant’s intent at the time the nonpublication request is being filed is not to file a counterpart foreign or international appli­cation that would be subject to eighteen-month publi­cation"

[JimIvey]

Good catch, Klav.  I had an intuitive sense that the approach was a really bad idea but didn't take the time to sort out the many reasons.

It seems possible that the intent was to not seek foreign applications and that intent was only recently formulated.

And, I have a question (food for thought):  does "counterpart application" imply shared priority under the Paris Convention?  Or any application for the same or similar subject matter from the same applicant?  In other words, I wonder if the lack of a link through the Paris Convention is any protection for failing to rescind the publication request?

Lastly, if the intent really did change only recently, I wonder if the OP could rescind the request for non-publication after allowance prior to the foreign filing to avoid problems.  Looks like it would be okay so long as the Office is notified of the foreign filing within 45 days of the filing.

Regards.

[khazzah]

Lastly, if the intent really did change only recently, I wonder if the OP could rescind the request for non-publication after allowance prior to the foreign filing to avoid problems.  Looks like it would be okay so long as the Office is notified of the foreign filing within 45 days of the filing.

That's definitely my understanding: that you can rescind within the 45 days as long as you can certify as to intent (or lack thereof?).

In fact, you *must* rescind within the time period, or your still-pending US app is deemed, by law, to be abandoned, even if the PTO doesn't know about the foreign filing. And in this scenario, the US app must still be pending, since if OP foreign files same day/after the foreign filing, his issued patent is novelty-destroying prior art.

So, OP, you need to read up on the procedure for rescinding a non-pub request.

[Dazed-n-confused]

In fact, you *must* rescind within the time period, or your still-pending US app is deemed, by law, to be abandoned, even if the PTO doesn't know about the foreign filing. And in this scenario, the US app must still be pending, since if OP foreign files same day/after the foreign filing, his issued patent is novelty-destroying prior art.

Back to novelty-destroying.  I think his granted US will be novelty destroying art in any event, in most jurisdictions (in the "filed before, published after, may be used for novelty purposes only" sense).


 

[JimIvey]

Back to novelty-destroying.  I think his granted US will be novelty destroying art in any event, in most jurisdictions (in the "filed before, published after, may be used for novelty purposes only" sense).

 

My general sense is that most jurisdictions do what the US does: only US filing dates count for anticipation under 102(e).  Applications filed abroad don't anticipate in the US, and -- from what I understand -- many jurisdictions do the same.

But this is clearly a jurisdiction-by-jurisdiction issue.

Regards.

[mattthew]

Amazing work I really appreciate all the help.

My real intent:  There was no way I was going to spend the money to file abroad before it was too late so opted for this strategy.

It sounds like there is a maybe in there? but based on the rules posted by klaviernista it seems like my plan is exactly what they are trying to prevent.

But then the statement about an applicant having less than a %50 foreign file track record makes me wonder why they are bothering to caution.  Seems like they could just say that if you don't get published in 18 months you can't file foreign, but they aren't just coming out and saying that.  Seems to imply a way through.

I guess what would be really helpful is if I knew a way to search for anyone else who's managed it.

Thanks again,
Matthew

[JimIvey]

It sounds like there is a maybe in there? but based on the rules posted by klaviernista it seems like my plan is exactly what they are trying to prevent.

I think this is the crux of the matter.  Regardless of whether you could squeak through the rules/laws and preserve rights outside the US, the perception of any would-be buyer who understands patents would be that any value there might have been in foreign rights a couple years ago are now gutted.  And, people in the US seem to be willing to spend very little, if anything at all, for foreign rights -- even when they're fully in tact.

I don't have case law and statutes and rules to cite, but my intuitive sense is that you should take your US patent and feel a bit lucky that you didn't inadvertently screw it up by adopting a strategy that the rules are designed to prevent. 

And, I'd be quiet about your strategy; one reading of the rules suggests your request for non-publication was improper and there might be consequences for that. 

Regards.

[NJ Patent1]

Jim, Dazed:  this is my understanding also.  Art. 54(3) EPC speaks only to European patent applications. 

"(3)Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

Part of state-of-the art for novelty and inventive step as I read it.  Although IMO the he OP's proposed appraoch flunks the "smell test" and I do not suborn perjury, the approach could be lawful.  Intent is a tough proof.  Could it be inferred?  If the Office doesn't buy the assertion, what is the recourse? 

[Dazed-n-confused]

Jim, Dazed:  this is my understanding also.  Art. 54(3) EPC speaks only to European patent applications. 

NJP1 and Jim - you're right.  "My bad" as the kids say.  I must have had a senior moment.  I should have recalled I've had any number of cases where in the EPO we'd file claim set "A" for several countries and narrower set "B" for other because a piece of EPO prior art had only originally designated the "B" countries and was not prior art in the "A" countries.

[NJ Patent1]

Dazed:  Can you help me here w/ clarification?  Did you file 1: 2 EP apps with two separate claim sets; or 2: one EP app w/ 2 claim sets?  Only option 1 appears to achieve the objective. IMO 54(3) would apply to all claims in one unitary EP app.  But Enlarged Board (Grossbeschwerdekammer) decisions oft leave ME dazed-and-confused.  What ARE they saying?  . 

[mattthew]

Thanks again for all the help.  I'm also confused about the above post issue but that's probably not easily remedied as I'm a novice.

JimIvey,

I was unaware foreign patent rights were worthless? If that's the case then this is a minor issue.  Though I spoke with the president of a company with a very valuable patent in the US and he lamented they hadn't gotten foreign patents.

My principle intent in my strategy was to keep my invention private until I found out weather or not I was likely to get a patent.  I didn't have a clear understanding of the foreign patent issue and thought I may be eligible only in no prior art other than my own had come up in the intervening years.  Basically I misunderstood the publication issue as simply being one of preserving the filing date for novelty alone.

The one advantage my approach would seem to have is that I could, upon having allowable claims and being confident no prior art existed to date, cancel my application and refile here and abroad thereby enjoying the longest possible patent term and patent rights.

Matthew